Tuesday 16 April 2019

Enforcing Intellectual Property Rights

Cardiff Law Courts
Author: Ham II

Licence Creative Commons Attribution-Share Alike 3.0 Unported

States grant patents to inventors to encourage them to share their inventions with the public after they have had a reasonable opportunity to recoup their investment in R & D and, with any luck, a little bit extra. Similarly, copyrights are granted to encourage publishers to disseminate works of art or literature.  Trade marks are a bit different as they indicate the source of goods and services in which consumers, as well as suppliers, have an interest. It is perhaps for that reason that WTO members are required by an annexe to the agreement setting up that organization to treat counterfeiting (trade mark infringement on an industrial state) as an offence.

Because intellectual property rights are intended primarily to benefit rights holders it is they who have primary responsibility for enforcement.  In Wales and England (as in most countries) that means bringing proceedings in the civil courts.  Remedies include injunctions (orders by a judge not to do something or, occasionally, to do something on pain of fine or imprisonment for disobedience), damages (compensation for past wrongdoing) or an account of profits (disgorging ill-gotten gains), surrender of all infringing articles and costs (a contribution to the successful party's legal fees). 

As parties to disputes in Wales and England decide the issues to be determined and the evidence to be considered, civil litigation there is much more expensive than on the continent where the judge chooses the issues to be considered and the evidence he or she wants to hear.  According to TaylorWessing's patent map, a patent infringement action in London can cost anything from £200,000 to £1 million compared to €200,000 to €800,000 in France, €100,000 to €200,000 in Germany, €75.000 to €200,000 in the Netherlands and €2,530 to €375,000 in Switzerland.

Claims for patent, registered or registered Community design, semiconductor topography or plant breeders' rights infringement have to be brought in the Patents Court or the Intellectual Property Enterprise Court ("IPEC").  Both courts are based in the Rolls Building off Fetter Lane in London but paragraph 4 of the Patents Court Guide and paragraph 1.5 of the IPEC Guide state that the judges off both courts are ready and willing to sit outside London in order to save time and costs. That has only happened once in the case of each court.  In Hadley Industries Plc v. Metal Sections Limited, Metsec (UK) Limited [1998] EWHC Patents 284 (13 Nov 1998) Mr Justice Neuberger (as he then was) sat in Birmingham as a judge of the Patents Court.  In APT Training & Consultancy Ltd and another v Birmingham & Solihull Mental Health NHS Trust [2019] EWHC 19 (IPEC) (9 Jan 2019) Judge Melissa Clarke sat in Birmingham as a judge of IPEC.

Both the Patents Court and IPEC are specialist courts within the Chancery Division of the High Court of Justice with judges who have either practised at the IP bar or otherwise acquired expertise in IP. IPEC is for claims of £500,000 or less that can be tried in no more than 2 days. The costs that can be recovered in IPEC from an unsuccessful party are capped at £50.000.

Claims for infringement of all other IP rights can be brought either in London or a town or city with a Chancery District Registry. Wales has Chancery District Registries in Cardiff, Caernarfon and Mold though the courts in Caernarfon and Mold do not have jurisdiction to hear trade mark disputes. Unlike the Patents Court, IPEC hears cases other than patent, registered and registered Community design, semiconductor topography and plant varieties disputes so long as the claim is for £500,000 or less and the case can be tried in 2 days or less. Again, there is a £50,000 limit on the costs that can be recovered from an unsuccessful party.  Theoretically, both the High Court and the County Court sitting in Cardiff, Caernarfon and Mold have jurisdiction to hear IP cases other than those that are reserved to the Patents Court or IPEC.  In practice,  County Court judges outside London tend to transfer smaller and simpler IP cases to IPEC and the larger and more difficult ones to the High Court.

IPEC has a small claims track to hear claims for infringement of all IP rights except patents, registered or registered Community designs, semiconductor topographies or plant varieties that can be tried in one day where the damages or other monetary remedy is £10,000 or less (see Small IP Claims on the NIPC Law website), The procedure is simpler than in other courts and the costs that can be recovered from an unsuccessful party are limited to just a few hundred pounds.

As for alternatives to litigation, the Intellectual Property Office ("IPO") in Newport has jurisdiction under s.61 (3) of the Patents Act 1977 to hear patent infringement claims where no injunction is sought, though that jurisdiction is hardly ever invoked.  IPO tribunals regularly hear claims for
  • revocation, amendment and declarations of non-infringement of patents, 
  • oppositions to trade mark applications and applications for revocation and declarations of invalidity of granted trade marks and 
  • the cancellation of registered designs. 
The IPO offers a mediation service for all IP disputes. Its examiners will offer non-binding opinions on whether patents are valid, whether they have been infringed and other matters.

The Internet Corporation for Assigned Names and Numbers and several national domain name authorities such as Nominet offer an inexpensive procedure for resolving disputes between trade mark owners and the holders of domain names as I mentioned in Welsh Top Level Domain Names 12 April 2019.  I gave an example of the resolution of such a dispute in Welsh IP Cases: D2016-0485 ALDI GmbH & Co. KG v. Mahfuz Ali 13 April 2019.

As IP litigation is expensive startups and other small and medium enterprises are advised to consider insurance against the cost of bringing and defending IP claims.  I have written extensively on IP insurance most of which is summarized in IP Insurance; CIPA's Paper  1 May 2016 NIPC Inventors Club.

Anyone wishing to discuss this article should call me on 020 7404 5252 during office hours or send me a message through my contact page.

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